Ex Parte 6979117 et al

Board of Patent Appeals and Interferences

Mar 26, 2012

90009113 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/008,814 08/13/2007 6979117 46264.0047 7484
57600 7590 03/26/2012
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
EXAMINER
STEIN, STEPHEN J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/26/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Vita-Mix Corporation
Requester

v.

K-TEC, Inc.
Patent Owner
____________

Appeal 2011-011079
Reexamination Controls 95/000,228, 90/009,113, 90/008,814
Patent 6,979,117 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-0011079
Reexamination Controls 95/000,228, 90/009,113, 90/008, 814
Patent 6,979,117 B2

2
Third-Party Requestor Vita-Mix Corporation (hereinafter “Requester”
or “Vita-Mix”) appeals under 35 U.S.C. §§ 134(c) and 315(b) from the
Examiner’s refusal to reject claims 1-36.1 Patent Owner K-TEC, Inc.
(hereinafter “Patent Owner” or “K-TEC”) urges that the Examiner’s decision
must be affirmed.2 We have jurisdiction under 35 U.S.C. §§ 134(c) and
315(b). We affirm the Examiner’s decision not to reject claims 1-36.

STATEMENT OF THE CASE
This is a merged reexamination proceeding of Reexamination Control
Nos. 95/000,228, 90/009,113, and 90/008,8143 of United States Patent
6,979,117 B2 (hereinafter the “‘117 Patent”), issued to Thomas D. Dickson,
Jr. on October 16, 2007, based on Application 10/947,682 filed September
23, 2004, which is said to be a continuation of Application 10/150,919, filed
on May 17, 2002, now United States Patent 6,811,303. The ‘117 Patent is
related to U.S. Patent No. 7,281,842 B2 (hereinafter the “‘842 Patent”),
which issued from Application 11/318,830 filed December 26, 2005 and is
said to be a continuation of the application resulting in the ‘117 Patent. The
‘842 Patent is the subject of inter partes reexamination control number

1 See Requester’s Appeal Brief 4 (filed October 12, 2010) (hereinafter “Req.
App. Br.”); Examiner’s Answer (mailed March 31, 2011) (hereinafter
“Ans.”); Right of Appeal Notice (mailed July 15, 2010) (hereinafter
“RAN.”).
2 See Patent Owner’s Corrected Respondent Brief (filed February 28, 2011)
(hereinafter “PO Resp. Br.”).
3 See Decision, Sua Sponte, to merge Reexamination Proceedings mailed
March 23, 2009.
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Patent 6,979,117 B2

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95/000,339, in which we affirmed the Examiner’s decision not to reject the
claims. (See Decision in Appeal No. 2011-005541.)
We are also informed that the ‘117 Patent is the subject of litigation
styled K-Tec v. Vita Mix, Civil Action No. 2:06-cv-00108 (D. Utah). (Req.
App. Br. 2; PO Resp. Br. 3.)
Oral arguments from both Requester and Patent Owner were heard in
the present appeal on December 7, 2011, a written transcript of which was
entered into the electronic record on January 20, 2012.4
The ‘117 Patent relates to blending devices, including blending jars
into which ingredients for beverages may be inserted. (Col. 1, ll. 13-15; col.
6, l. 35 - col. 7, l. 12.) The blending jars are said to reduce the problem of
cavitation (where a pocket of air envelopes the area surrounding the mixing
blade) and increase the speed and efficiency with which beverages, such as
smoothies, can be made. (Col. 2, ll. 7-11, col. 7, ll. 9-12.) Claim 1, which is
illustrative of the appealed subject matter, reads as follows (paragraphing
added for clarity):
1. An apparatus, comprising:
a movable blending member;
a blending jar, the blending jar comprising:
a bottom wall with a central axis;
four side walls extending from the bottom wall that form
intersecting corners;
a fifth truncated wall disposed between two of the four
side walls;

4 We have considered the arguments of both Requester and Patent Owner
only to the extent that they were presented in the briefs. See 37 C.F.R.
41.73(e)(1).
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a handle secured to the blending jar at the truncated fifth
wall;
wherein the fifth truncated wall is positioned closer to the
central axis than the intersecting corners formed by the four
side walls.
(Req. App. Br. 31 Claims App’x.)
Requester contests the Examiner’s decision not to reject the claims as
follows:
I. Claims 1-4, 7, 9, 14-16, and 36 under 35 U.S.C. § 102(e) as
anticipated by Miller ‘456;5
II. Claims 5, 6, 8, 10-13, and 17-36 under 35 U.S.C. § 103(a) as
obvious over Miller ‘456, in view of Grimes, 6 Hobbs,7 and
Prothe;8
III. Claims 1-36 under 35 U.S.C. § 103(a) as obvious over Ash9 in
view of K-TEC Stackable Jar,10 Grimes, and Prothe;
IV. Claims 1-36 under 35 U.S.C. § 103(a) as obvious over Hauser11
in view of K-TEC Stackable Jar, Grimes, and Prothe;
V. Claims 1-36 under 35 U.S.C. § 103(a) as obvious over Hobbs in
view of K-TEC Stackable Jar;
VI. Claims 1-7, 9-18, and 36 under 35 U.S.C. § 103(a) as obvious
over Grimes in view of K-TEC Stackable Jar;

5 U.S. Patent No. 7,063,456 B2 (issued June 20, 2006) to Miller
6 U.S. Patent No. D227,535 (issued July 3, 1973) to Grimes.
7 U.S. Patent No. D163,117 (issued May 1, 1956) to Hobbs.
8 U.S. Patent No. 5,219,419 (issued June 15, 1993) to Prothe.
9 U.S. Patent No. 6,431,744 (issued August 13, 2002) to Ash.
10 Sales Brochure for the K-TEC ABC Blender Jar –publication date,
October 2000.
11 U.S. Patent No. D187,684 (issued April 12, 1960) to Hauser.
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VII. Claims 1-36 under 35 U.S.C. § 103(a) as obvious over Hobbs in
view of Dickson ‘198;12
VIII. Claims 1-7, 9-18, and 36 under 35 U.S.C. § 103(a) as obvious
over Grimes in view of Dickson ‘198;
IX. Claims 1-36 under 35 U.S.C. § 103(a) as obvious over Grimes
in view of Dickson ‘557;13 and
X. Claims 1-4, 7-10, 14-16, 19-22, 25-30, and 36 under 35 U.S.C.
§ 103(a) as obvious over Hobbs in view of Dickson ‘557; and
XI. Claims 1-36 under 35 U.S.C. § 103(a) as obvious over Hobbs in
view of Dickson ‘557 and Prothe.

Patent Owner relies on the following evidence of patentability:14
Declaration of Clarke B. Nelson dated June 28, 2007 (hereinafter “the
Nelson Declaration”).
Declaration of Mark Miller dated July 6, 2007 (hereinafter “the Miller
Declaration”).
Declaration of Dick Galbraith dated June 13, 2007 (hereinafter “the
Galbraith Declaration”).

12 U.S. Patent No. 5,556,198 (issued Sep. 17, 1996) to Dickson, Jr.
13 U.S. Patent No. 5,957,557 (issued Sep. 28, 1999) to Dickson, Jr.
14 Patent Owner references several other documents produced during the
District Court Litigation proceedings. (PO Resp. Br. 23-30.) However, we
have not been informed as to where these documents have been made of
record in the present reexamination proceeding. Accordingly, we have not
considered Patent Owner’s arguments regarding these documents in
deciding the present appeal.
Appeal 2011-0011079
Reexamination Controls 95/000,228, 90/009,113, 90/008, 814
Patent 6,979,117 B2

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Declaration of Shawn Elgaaen dated June 13, 2007 (hereinafter “the
Elgaaen Declaration”).

ISSUES
The dispositive issues on appeal are:
(1) What is the broadest reasonable interpretation in light of the
Specification of the ‘117 Patent, of “a fifth truncated wall disposed between
two of the four sidewalls . . . wherein the fifth truncated wall is positioned
closer to the central axis than the intersecting corners formed by the four
side walls” recited in claim 1?
(2) Does Miller ‘456 disclose a fifth truncated wall positioned closer
to the defined axis than corners formed by the four side walls?
(3) Does Ash disclose a fifth truncated wall positioned closer to the
defined axis than corners formed by the four side walls?
(4) Does Hauser disclose a fifth truncated wall positioned closer to
the defined axis than corners formed by the four side walls?
(5) Would Hobbs or Grimes in view of K-TEC Stackable Jar,
Dickson ‘198 or Dickson ‘577 have rendered the apparatus as claimed
obvious?

Appeal 2011-0011079
Reexamination Controls 95/000,228, 90/009,113, 90/008, 814
Patent 6,979,117 B2

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FINDINGS OF FACT (“FF”)
1. Figure 11 of the ‘117 Patent is reproduced below:

Figure 11 is a top view of the mixing jar depicted in Figure 10
including walls 132, 134, 136, 138, truncated wall 135, and
blade 28 having a central pivot axis 144. (Col. 3, ll. 32-34, col.
6, ll. 54-60.)
2. The ‘117 Patent states that: “wall 135 is much closer to the
central axis 144 of blade 28 as compared to the corners formed
by walls 132, 134, 136, 138.” (Col. 6, ll. 58-60.)
3. The ‘117 Patent further states that: “In one embodiment, wall
135 is approximately 2.4 inches from the central pivot axis 144
of blade 28 (at the height of the blade). In contrast, corners
formed by walls 132, 134, 136, 138 are approximately 3.5
inches from the central axis 144.” (Col. 6, l. 65 – col. 7, l. 2.)
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4. Miller ‘456 discloses containers used to blend liquids. (Col. 1,
ll. 13-17.)
5. Figure 4 of Miller ‘456 is reproduced below:

Figure 4 above depicts a sectional view of a blender container,
having a heart-shaped configuration with two lobes 29, curved
area 27, side wall 17, bottom surface 16, blade assembly 20,
blades 21, and shaft 22. (Col. 2, ll. 38-39, col. 3, ll. 19-29, col.
4, ll. 4-12.)
6. Miller ‘456 discloses that the radius of curvature of side area 27
“generally approximates the curvature of the circle that the tips
of blades 21 transcribe while rotating.” (Col. 4, ll. 12-15.)
7. Miller ‘456 discloses: “As shown in the drawings, blade
assembly 20 is not centered relative to bottom surface 16. That
is, irrespective of the shape of surface 16, be it circular, square,
rectangular, or a non-symmetrical shape such as shown in
FIGS. 3, 4, and 6, the axis of rotation of blades 21, as defined
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Patent 6,979,117 B2

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by shaft 22, is not positioned on the centroid of the bottom
surface 16.” (Col. 3, ll. 23-29.)
8. Miller ‘456 discloses that the fluid flow pattern that the
resulting “nonuniform, non-symmetrical or unbalanced flow
will disrupt the tendency of the fluid to form the undesirable
bridge [cavity].” (Col. 3, ll. 51-54.) Miller ‘456 also discloses
that the factors leading to the flow pattern are the “off-center
blade assembly, the non-symmetrical bottom surface and the
sloped bottom surface, which may singly, or in combination,
enhance the flow pattern.” (Col. 4, l. 65 – col. 5, l. 3.)

Appeal 2011-0011079
Reexamination Controls 95/000,228, 90/009,113, 90/008, 814
Patent 6,979,117 B2

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9. Figure 3 of Hobbs is reproduced below:

Figure 3 above is a top plan view of a pitcher design. (Hobbs,
p. 2.)
10. Figure 2 of Grimes is reproduced below:

Figure 2 of Grimes is a top plan view of a pitcher design.

PRINCIPLES OF LAW
“‘During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
Appeal 2011-0011079
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(Fed. Cir. 2007)). Nevertheless, our reviewing court has repeatedly
“instructed that any such construction [must] be ‘consistent with the
specification, . . . and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Id. at 1260.

ANALYSIS
Issue (1) Claim Interpretation
We begin by interpreting the claims, in particular, the limitation: “a
fifth truncated wall disposed between two of the four side walls . . . wherein
the fifth truncated wall is positioned closer to the central axis than the
intersecting corners formed by the four side walls” as recited in claim 1.
Requester contends that the term “truncated wall” means a wall that
truncates a typical corner that would have existed between the two side walls
adjacent to the truncated wall but for the presence of the wall itself and
independent of the other corners of the jar. (Req. App. Br. 18-24; Req. Reb.
Br. 2-10.) Requester also argues that the claims do not require that: (1) the
“corners formed by the four side walls” recited in the claims must be only
between side walls; and (2) the positions of fifth truncated wall and the
corners relative to the axis must be evaluated in the same horizontal plane.
(Req. App. Br. 22-24, Req. Reb. Br. 15-19.)
Patent Owner argues that the corners recited in the claims are the
corners formed only by side walls and that the truncated wall must be
compared to the corners at the same horizontal plane of the jar. (PO Resp.
Br. 9-11.) The Examiner agreed with Patent Owner that the fifth wall is
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truncated with respect to the other corners formed by the sidewalls and that
the corners recited in the claims are the corners formed only by side walls.
(RAN 7, 19-20.)
The parties agree that in light of the ‘117 Patent the “truncated fifth
wall” truncates a “typical” corner that would otherwise be formed between
two sidewalls. (Req. Reb. Br. 2; PO Resp. Br. 9.) However, the parties
disagree as to what a “typical corner” means. Based on the plain language
of the claim, we agree with Patent Owner that the fifth wall is truncated as
compared to intersecting corners formed between two other existing
sidewalls of the blender jar. Specifically, claim 1 recites that the fifth
truncated wall is “disposed between two of the four side walls” and is
“positioned closer to the central axis than the intersecting corners formed by
the four side walls.” Thus, in describing the fifth truncated wall, the claim
relates the positioning of the fifth wall with respect to the other existing
corners of the blender jar.
We do not subscribe to the position that one of ordinary skill in the art
in interpreting the claims in light of the ‘117 Patent Specification would
have ignored the other existing corners in the blender jar. Although the
blender jar depicted in Figure 11 is one embodiment, the description of a
truncated wall in the ‘117 Patent serves to inform one of ordinary skill as to
how the claims should be interpreted. Specifically, the ‘117 Patent
Specification states that truncated wall 135 “is much closer to the central
axis 144 of blade 28 as compared to the corners formed by walls 132, 134,
136, 138.” (FF 1, 2.) As such, in light of the ‘117 Patent Specification, one
of ordinary skill in the art would have understood that the identity and
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Patent 6,979,117 B2

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positioning of the fifth truncated wall relates to the existing corners formed
by the sidewalls.
Further, we do not agree with Requester that in determining whether
the fifth truncated wall is positioned closer to the central axis, one of
ordinary skill in the art would have considered a corner that is formed by the
truncated wall itself and a side wall as a reference corner. That is, since the
fifth wall truncates a typical corner that would otherwise be formed by the
sidewalls, in determining whether the truncated wall is positioned closer to
the central axis, the broadest reasonable interpretation dictates that one of
ordinary skill would have also looked to the existing corners formed by the
sidewalls to make such a determination. This is consistent with the claim
language reciting the position of the fifth truncated wall comparatively to
intersecting corners “formed by the four side walls.” Thus, one of ordinary
skill in the art would have understood that the corners recited in the claims
are corners between two sidewalls, 132/134, 134/136, 136/138, in view of
the above quoted portions of the ‘117 Patent and the figures therein.15 (FF
1-3.)
We do not view claims 14 and 15 as being inconsistent with this
interpretation. Claim 14 recites “three intersecting corners formed by the

15 We note that the ‘117 Patent contains additional language in col. 6, ll. 60-
65 not found in the ‘842 Patent, which is said to be a continuation of the
‘117 Patent. We find such an omission curious in light of the
characterization of the ‘842 Patent as a continuation of the ‘117 Patent.
However, we do not view the additional language in the ‘117 Patent as
inconsistent with our analysis in our Decision in Appeal No. 2011-005541
(Pages 8-10), as explained with respect to claims 14 and 15 infra, which
relate to the additional subject matter disclosed in the ‘117 Patent.
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Patent 6,979,117 B2

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four side walls” and claim 15 recites that the intersecting corners “further
comprise two intersecting corners formed by the truncated wall and two of
the four side walls.” One of ordinary skill in the art, in light of the
Specification, would not have interpreted the corners formed between the
sidewalls and the truncated walls as “intersecting corners formed by the four
sidewalls” as asserted by Requester. (Req. App. Br. 22-23.) While the
corners formed between the sidewalls and the truncated wall are intersecting
corners, they are not the corners formed “by the four side walls” as is
expressly recited in the claim and as further described in the ‘117 Patent
Specification and drawings. (See FF 1, 2.)
We further do not agree with Requester that the broadest reasonable
interpretation of the claims allows for the distances between the fifth
truncated wall and the corners formed by the side walls to the blending
element axis to be measured at different heights of the jar. In the
accompanying description, the ‘117 Patent indicates that the distances
between the truncated wall and the corners are “at the height of the blade.”
(FF 3.) Although the sentence in the ‘117 Patent which specifies the height
of the blade begins with the phrase “[i]n one embodiment,” we do not
understand this phrase to relate to how the distances are measured, but rather
to the particular distances disclosed. (FF 3.)
In other words, while the distance between the truncated wall and the
central axis, and the distance between the corners formed by the sidewalls
and the central axis may vary, the method by which these distances are
measured, at the height of the blade, does not. Indeed, in order for the
distances recited in the claims to have any meaning, there must be a
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reference point in order to provide a basis for comparison. Thus, one of
ordinary skill in the art would have understood the claimed distance
limitation in view of the Specification of the ‘117 Patent which provides
specific guidance that the distances should be evaluated at the blade height.
Accordingly, the broadest reasonable interpretation of the claims does not
allow for measurement of the distances between the corners and the
truncated walls in different horizontal planes.
Therefore, the broadest reasonable interpretation of the phrase: “a
fifth truncated wall disposed between two of the four side walls . . . wherein
the fifth truncated wall is positioned closer to the central axis than the
intersecting corners formed by the four side walls” requires that the fifth
wall truncates a corner, which but for the truncated wall would form a corner
similar to an existing corner between two sidewalls of the blender jar, and
that the distance from the fifth truncated wall to the axis is compared to
existing corners formed between two side walls of the blender jar in the
same horizontal plane.

Issue (2)-Miller ‘456
Requester contends that Miller ‘456 discloses a truncated wall in the
form of curved area 27, which truncates a typical corner formed by sidewalls
17 as depicted in Miller ‘456’s Figure 4. (Req. App. Br. 6-12.)
Patent Owner argues that Miller does not disclose the recited fifth
truncated wall because Miller ‘456 fails to disclose a wall that truncates a
typical corner that would otherwise be formed by two of the four side walls.
(PO Resp. Br. 11-15.) The Examiner agrees with Patent Owner. (RAN 15.)
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We agree with Patent Owner and the Examiner that Miller ‘456 does
not disclose a truncated wall as the term has been interpreted supra. That is,
even if we were to agree with Requester that in Figure 4 of Miller ‘456,
curved area 27 is a separate area from the sidewalls 17 and truncates a
corner that would otherwise be formed between sidewalls 17, such a
truncation would not be relative to a typical corner as the term would have
been understood in light of the ‘117 Patent. (FF 5, 6.) Requester does not
direct us to any other corner in Miller ‘456’s Figure 4 (or Figures 3 and 6 of
Miller ‘456), which is indicative of a typical corner that curved area 27
would truncate. Miller ‘456 only discloses that the embodiments depicted in
Figures 3, 4, and 6 are “non-symmetrical,” and in describing square and
rectangular shapes, does not disclose that such shapes contain the claimed
truncated walls as interpreted above. (FF 7, 8.)
Therefore, we affirm the Examiner’s decision not to reject the claims
as being anticipated by Miller ‘456.

Issues (3) & (4) Ash and Hauser
Requester’s arguments that Ash discloses a blender jar with a
truncated wall are similar to those arguments advanced by Requester in
conjunction with the reexamination of the ‘842 Patent. (Decision in App.
No. 2011-005541, p. 10; Req. App. Br. 17-21, 22-24.) Because the claim
language with respect to the truncated wall at issue in the reexamination of
the ’842 Patent is sufficiently similar to the claim language regarding the
truncated wall in the present reexamination proceedings, we see no need to
repeat that discussion here. Therefore, we agree with the Patent Owner and
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the Examiner, that Ash does not disclose a blending jar having a truncated
wall as recited in the claims. (See Decision in App. No. 2011-005541, pp. 6
(FF 4) and 10-11.)
Requester relies on similar reasoning to distinguish Hauser as
presented for Ash. (Req. App. Br. 24.) Hauser was also discussed in our
decision in the reexamination of the ‘842 Patent. (See Decision in App. No.
2011-005541, pp. 7 (FF 5) and 11-12.) Again, we see no need to repeat that
discussion here. Therefore, we agree with the Patent Owner and the
Examiner, that Hauser does not disclose a blending jar having a truncated
wall as recited in the claims.
K-TEC Stackable Jar, Grimes, and Prothe are relied upon for the
addition of a handle to the blending jar. K-TEC Stackable Jar, Grimes, and
Prothe fail to remedy the deficiencies identified above with respect to Ash
and Hauser. Therefore, we affirm the Examiner’s decision not to reject the
claims using Ash or Hauser as the primary reference.

Issue (5) -Obviousness Rejections
Requester contends that in view of the pitchers containing truncated
walls disclosed in Hobbs and Grimes, it would have been obvious to have
added blades to Hobbs and Grimes in view of K-TEC Stackable Jar, Dickson
‘577, Dickson ‘198, or Prothe. (Req. App. Br. 13, 25.) Requester contends
that Patent Owner’s secondary considerations evidence is insufficient to
overcome the evidence of obviousness. (Req. App. Br. 25-27.)
Patent Owner argues that Grimes and Hobbs are not analogous art to
blending jars, and that there would be no reason for someone to look at
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pitcher designs to create an improved blender. (PO Resp. Br. 21-23.) Patent
Owner additionally contends that any conclusions of obviousness are
overcome in light of the objective evidence of non-obviousness presented by
Patent Owner. (PO Resp. Br. 23-30.) The Examiner appears to
acknowledge that Requester has presented sufficient evidence and reasoning
to establish a prima facie case of obviousness, but that the reasoning
provided by the Requester is not particularly strong, such that Patent
Owner’s evidence of unexpected results sufficiently outweighs any prima
facie case of obviousness. (See Non-Final Office Action mailed March 26,
2009, hereinafter “Non-Final”, 18-20; RAN 18.)
Initially, we do not agree with Patent Owner, that the pitchers of
Hobbs and Grimes would not be considered analogous art to formulating
blender jars. (See FF 9, 10.) As pointed out by Requester, both pitchers and
blenders perform similar functions, such as holding a fluid. (Req. App. Br.
20.) Moreover, both pitchers and blenders are used to dispense liquids in
similar manners, such as pouring a frozen beverage into a glass. The field of
endeavor can be correctly determined “by consulting the structure and
function of the claimed invention as perceived by one of ordinary skill in the
art” with “reference to explanations of the invention's subject matter in the
patent application.” In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004)
(affirming Board's finding that prior art toothbrush was in same field of
endeavor as patentee's hairbrush where Board concluded that “the structural
similarities between toothbrushes and small brushes for hair would have led
one of ordinary skill in the art working in the specific field of hairbrushes to
consider all similar brushes including toothbrushes”). Accordingly, the
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design pitchers depicted in Hobbs and Grimes are analogous art to blender
jars.
Contrary to Requester’s contentions, we, however, like the Examiner,
do not view the reasons given by Requester to modify the prior art
references, such as “reducing overall jar dimensions” while providing
“sufficient hand clearance” as particularly strong (Non-Final, p. 18-19.) as
we have not been directed to sufficient evidence that such characteristics
were lacking in the prior art. Thus, as discussed further infra, we agree with
the Examiner that the evidence of secondary considerations presented by the
Patent Owner is sufficient to outweigh the evidence of obviousness of
record.

Secondary Considerations
Once a prima facie case of obviousness has been established,
objective evidence of secondary considerations must be considered in
making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 1538-39 (Fed. Cir. 1983). Any initial obviousness determination
is reconsidered anew in view of the proffered evidence of nonobviousness.
See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co.,
902 F.2d 943, 945 (Fed. Cir. 1990); Ex Parte Quist, App. No. 2008-001183,
at 10-11 (BPAI June 2, 2010) (Precedential) (available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd08001183.pdf).
The ultimate determination of whether a claimed invention would
have been obvious or non-obvious is a legal conclusion, which is made
based on considering and weighing all of the facts in evidence. See In re
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Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A “nexus” must be
established between the merits of the claimed invention and the evidence of
secondary considerations in order for the evidence to be given substantial
weight. See In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
We do not agree with Requester that the evidence of secondary
considerations lacks a nexus to the claims because the claims do not recite
shifting the blending vortex in order to solve the problem of cavitation.
(Req. Reb. Br. 20-21.) Although the claims do not expressly recite that the
blending vortex is shifted and that cavitation is prevented, the claims do
recite the necessary structural features of the blending jar, which lead to the
desired result, namely the presence of the truncated wall and the relation of
the truncated wall to the central axis relative to the other corners formed by
the four side walls. Patent Owner’s evidence shows that in producing a jar
with a truncated wall, the shifting of the blending vortex accounted for the
prevention of cavitation and the blending times for difficult-to-blend
smoothie recipes were substantially reduced. (Dickson Decl. paras. 5-9;
Galbraith Decl. paras. 6-18.)

Copying
“[C]opying of a claimed invention can be evidence of
nonobviousness.” Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309,
317 (Fed. Cir. 1985). Copying may be demonstrated either through internal
documents, see Akamai Techs., Inc. v. Cable & Wireless Internet Servs.,
Inc., 344 F.3d 1186, 1196-97 (Fed.Cir.2003); direct evidence such as
disassembling a patented prototype, photographing its features, and using the
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photograph as a blueprint to build a virtually identical replica, see Advanced
Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000);
or access to, and substantial similarity to, the patented product (as opposed
to the patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1027 (Fed.Cir.1985), overruled on other grounds by, Midwest Indus., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed.Cir.1999) (en banc). Iron
Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
2004). In addition, “more than the mere fact of copying by an accused
infringer is needed to make that action significant to a determination of the
obviousness issue[]” because “copying may have occurred out of a general
lack of concern for patent property[.]” Cable Elec. Prods. v. Genmark, Inc.,
770 F.2d 1015, 1028 (Fed. Cir. 1985); see also In re GPAC, 57 F.3d 1573,
1580 (Fed. Cir. 1995).
Patent Owner has presented significant evidence that a blending jar
having the features recited in claim 1 sold by K-TEC was copied by Vita-
Mix. Specifically, the Elgaaen Declaration provides evidence that a
commercial embodiment of the ‘117 Patent was produced (K-TEC’s 5-sided
blending jar) and displayed at an American Association of Food Equipment
Manufacturers (NAFEM) trade show in Florida in September 2001.
(Elgaaen Declaration, para. 3-6, Ex. A.) Mr. Elgaaen also declared that a
blending jar made by Vita-Mix, mistakenly returned to K-TEC for repair,
was virtually identical to K-TEC’s blending jar, as indicated by photographs
directly comparing the two jars. (Elgaaen Declaration, paras. 8-14, Ex. B-
D.)
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In addition, the internal documents of Vita-Mix attached to the Miller
Declaration, specifically, the “Smoothie Container Development Program”
mentions K-TEC in designing a new container in February 2002, and
appears to show a container with a truncated wall as recited in the claims.
(Miller Declaration, para. 9, Ex. F, slides labeled V-000503 and V-000505;
Hinckley Dep. Page 90, ll. 22-25.) Internal e-mails of Vita-Mix also show
that when Vita-Mix became aware of K-TEC’s patent, they attempted to
redesign its XP container to “avoid infringements on the container” and
Vita-Mix had eliminated the “5th side” by “rounding” the side closest to the
handle thus creating “a container that is equal to [Vita-Mix’s] old design in
blending performance and stackability.” (Miller Declaration, para. 23; Ex.
T, pages marked V-01292 through V-01294; Miller Decl., para. 6; Ex. C,
Kolar Depo. page 32, l. 11 – page 38, l. 10; Miller Decl., para. 21; Ex. R;
Miller Decl., para. 27; Ex. X.) The internal documents further reveal that
the redesign was viewed as “just a cosmetic change.” (Miller Decl., para.
21; Ex. Y.)
Moreover, although Vita-Mix had its own patent in Miller ‘456, which
was designed to solve the cavitation problem (Req. App. Br. 22; FF 8), a
preponderance of the evidence shows that Vita-mix did not commercialize
an embodiment as depicted in the Figures of Miller ‘456. (Miller Dec. para.
5; Ex. B, page 86, l. 6 – page 87, l. 18.)

Long-Felt, Unresolved Need
Patent Owner’s additional evidence of long felt need is less
compelling.
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Establishing long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 539
(CCPA 1967). In addition, the long-felt need must not have been satisfied
by another before the invention by applicant. Newell Co. v. Kenney Mfg.
Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Hence, the appellant must present
affidavits or other factual evidence of “a failure of others to provide a
feasible solution to [a] long-standing problem” and evidence “that experts
did not foresee” the solution claimed. See In re Piasecki, 745 F.2d 1468,
1475 (Fed. Cir. 1984).
In the instant case, although the problem of cavitation may have been
long-felt, at least Ash provides evidence that the problem of cavitation had
been previously addressed. (See Req. Reb. Br. 22.) For similar reasons,
there is insufficient evidence that others had failed to solve the problem of
cavitation.

Unexpected Results
We agree with Requester, that Miller ‘456 and Ash provide evidence
that the shifted vortex as a result of a blending jar with truncated wall would
not have been unexpected. Specifically, as Requester points out, both Ash
and Miller ‘456 discuss alteration of fluid flow as a result of non-
symmetrical or irregular surfaces. (Req. Reb. Br. 22; FF 7, 8.) Further, the
comparisons regarding the improvement in cavitation and blending times are
made with respect to K-TEC’s four-sided jar (Dickson Decl. para. 7;
Galbraith Decl. para. 14.), rather than the closest prior art, as in Ash and
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Miller ‘456, which were designed to solve the cavitation problem. “[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.” In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Therefore, we
cannot subscribe to the position that it would have been unexpected that by
truncating a typical corner of a blending jar, and making the jar non-
symmetrical, the blending vortex would be shifted and would improve the
cavitation problem. See In re Freeman, 474 F.2d 1318, 1324-25 (CCPA
1973).

Commercial Success
Patent Owner’s evidence of commercial success is also not
compelling. If evidence of commercial success is relied upon, the Appellant
must offer proof “that the sales were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). The evidence must also
demonstrate commercial success in the relevant market. See Id. In addition,
there must be a nexus between the commercial success and merits of the
claimed invention. Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1026 (Fed. Cir. 1985).
The Nelson Declaration, which discusses the sales of certain
“infringing blending jars” sold by Vita-Mix, fails to identify with any
particularity what the “old style” and “new style” blending jars refer to and
what particular parts the item numbers in Schedules 2A and 2B. (Nelson
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Declaration, paras. 4, 6, Schedules 2, 2A, and 2B.) Moreover, we have not
been directed to sufficient evidence of market share, or that the sales relate
to the features recited in the claim. Therefore, we accord Patent Owner’s
evidence of commercial success little weight.

Summary
Although there is some evidence in the record as to the obviousness of
adding blades to Hobbs and Grimes, that evidence is not particularly strong.
In contrast, the evidence of copying is substantial, and therefore we are of
the opinion that Patent Owner’s objective evidence of secondary
considerations outweighs the evidence of obviousness of record.

CONCLUSION
On this record:
the broadest reasonable interpretation in light of the Specification of
the ‘117 Patent, of “a fifth truncated wall disposed between two of the four
sidewalls . . . wherein the fifth truncated wall is positioned closer to the
central axis than the intersecting corners formed by the four side walls”
recited in claim 1 requires that the fifth wall truncates a corner, which but for
the truncated wall would form a corner similar to an existing corner between
two sidewalls of the blender jar, and that the distance from the fifth
truncated wall to the axis is compared to existing corners formed between
two side walls of the blender jar in the same horizontal plane;
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Miller does not disclose a fifth truncated wall positioned closer to the
defined axis than corners formed by the four side walls;
Ash does not disclose a fifth truncated wall positioned closer to the
defined axis than corners formed by the four side walls;
Hauser does not disclose a fifth truncated wall positioned closer to the
defined axis than corners formed by the four side walls; and
Hobbs or Grimes in view of K-TEC Stackable Jar, Dickson ‘198 or
Dickson ‘577 would not have rendered the apparatus as claimed obvious in
view of the preponderance of evidence of record.

DECISION
The Examiner’s decision not to reject claims 1-36 under 35 U.S.C.
§§ 102 and103 is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
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An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

PATENT OWNER:
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City UT 84110

THIRD-PARTY REQUESTER:
MCDONALD HOPKINS LLC
600 Superior Avenue East, Suite 2100
Cleveland, OH 44114-2653